Trademark in Hong Kong
Trademarks are registered via the Hong Kong Intellectual Property Department (IPD). Please remember that although the People’s Republic of China has sovereignty over Hong Kong, both territories still maintain separate registration systems and so a trademark registered in China does not have validity in Hong Kong, same as in Macau.
Trademark application in Hong Kong based on intent to use basis. No proof of use is required for the issuance of the trademark certificate or for renewal. Nevertheless, if a registered trademark is not used in Hong Kong for any continuous period of 3 years, any person can apply for its removal on the ground of non-use. It is same as China mainland trademark law in 2019.
Foreign company or individual can apply to register their marks in Hong Kong without nationality restriction or residency requirement. In this process you just need provide information below:
- Owner’s full name
- Description of goods and services
- Logo or stylized mark in jpg format
Trademark deficiencies checking
Before examining your application, we will carry out a thorough check of the application form and any attachments. This is to see if all the necessary parts of the form have been filled in, if they are correct and if any required information is missing. If any information is missing, we will ask you to provide the information to remedy the deficiencies. Some amendments are very minor and will not affect the filing date of your application, others are more important and will therefore affect the filing date. For example, you have not provided the representation of your trade mark. Also, major changes to the application will not be accepted, for example, changes to the representation of the trade mark. It usually take two days in this period of time.
Trademark search and examination
We usually conduct a free-of-charge search before filing. The purpose is to find if the same or similar trade mark has already been registered or been applied for by another trader in respect of the same or similar class of goods and services.
If such free search reveals any similar mark that cannot be obviously ruled out, the client has a choice of instructing us to obtain an official search by the Trade Marks Registry as to whether in its opinion there is any conflicting prior mark. The time needed is 1 to 3 weeks. The opinion will be given by an examiner on the official letterhead of the Intellectual Property Department of the Hong Kong Government.
The fee for official search is HK1000 per mark for the first class and HK500 for each sub-class included in the same request. If the result of the official search is positive and the follow-on application is rejected by the examiner contrary to the official search opinion, the official search fee and the application fee will all be refunded. It usually takes 6 months in this period.
Publication for opposition
If applicant meet the registration requriement after the examination, anyway it is good news for the applicant. Since the date your application is published, anyone can view your trade mark in the Hong Kong Intellectual Property Journal and submit an opposition to it in 3 months. As the applicant, you may withdraw your application or respond to the opposition by filing any evidence.
Please note that if you withdraw your application or lose in the opposition proceedings, you may have to pay the other’s costs. You and your competitor are given the opportunity, within certain time limits, to file evidence in support of the application and opposition. When all the evidence has been received, a hearing will take place before a hearing officer who then makes a decision. The successful party in opposition proceedings is usually entitled to an award of costs.
If noboday submit oppsition in 3 months, your trade mark has been accepted for registration, it will be published in the Hong Kong Intellectual Property Journal at http://www.ipd.gov.hk/eng/ip_journal.htm
Hearing usually means one meeting organized by officals to talk about the avilability of your mark registration.
In the examination process, if your application is objected, that means it does not meet the registration requriements, you need provide more information to support your application in next 6 months, it will extend more 3 month if necessary. At this stage, it is very important to look for evidence to support your registration. If you fail to do it, you have to call for hearing within the last days.
On the hearing, your evidence and the against trade marks are needed, the officals will make one decision.